Plaintiff Varsity Brands Inc. — the world’s largest producer of cheerleader gear – claimed that Star Athletica, LLC infringed their valid copyrights by selling cheerleading apparel that mimicked those designs.2 In response, Star Athletica argued that the cheerleading uniform is clothing which is a functional, “useful item” as defined under the Copyright Act, and thus ineligible for copyright protection.3 The lower court agreed with Star Athletica finding that Varsity’s stripes and chevrons were inseparable from the utilitarian, and otherwise unprotectable, aspects of the uniform.4 Thus, the issue presented before the Sixth Circuit was whether Varsity’s designs could be “identified separately from, and are capable of existing independently of” the utilitarian aspects of the uniform on which those designs rested.5

While acknowledging that it was tackling a “question that has confounded courts and scholars,” the Sixth Circuit reversed the lower court’s decision and found that Varsity’s cheerleading uniform designs are “conceptually separable” from the clothing itself. Circuit Judge Karen Nelson Moore wrote for the majority claiming that the lower court’s holding would “render nearly all artwork unprotectable.”6 For the majority, the 19th century Dutch artist Mondrian was especially helpful in exemplifying the relevance of the court’s decision. “Under this theory of functionality, Mondrian’s painting would be unprotectable because the painting decorates the room in which it hangs. But paintings are copyrightable.”7

Judge Ralph Guy Jr. joined Moore’s opinion, while Judge David McKeague dissented. “Without stripes, braids, and chevrons, we are left with a blank white pleated skirt and crop top,” McKeague said. “This may be appropriate attire for a match at the All England Lawn Tennis Club, but not for a member of a cheerleading squad.”8

Both the majority and dissent admit that the case law regarding “conceptual separability” is a “mess.”9 The majority opinion included a rundown of nine distinct approaches that courts have used over the years as they “struggled mightily to formulate a test” for conceptual separability.10 With terms like “confounded” and “a mess,” the 6th Circuit brings to light the lack of consensus for which there is in determining whether apparel should be given copyright protection.11 While other countries, particularly in Europe, have created specific apparel design “rights,” American companies continue to struggle with the inadequate intellectual property protection for their fashion designs.12

With a split panel ruling, it is of little surprise that Star Athletica recently asked for the Sixth Circuit to overturn its decision. In a petition for an en banc rehearing filed September 16th, Star Athletica claims the ruling would have “immense practical implications” for the apparel industry.13 Star Athletica claims that the 6th Circuit’s ruling ignores the fact that Congress specifically tried to avoid extending copyright protection to clothing.14

However, courts rarely accept en banc petitions, and Star Athletica was no exception. On a hearing October 7th, the Sixth Circuit refused to reconsider its ruling. “The original panel has reviewed the petition for rehearing and concludes that the issues raised in the petition were fully considered upon the original submission and decision of the case,” the court said.15 This case represents not only a win for Varsity but also a win for American fashion designers.